Even though your trademark application is approved by an examining attorney with the U.S. Patent and Trademark Office, your application is subject to a 30-day period of publication in the USPTO’s Official Gazette during which anyone can oppose registration of your trademark. If you receive a notice that an opposition was filed, you must answer the opposition. Failure to do so will result in a default judgment against you and your trademark will not be registered. All proceedings related to the opposition take place before the Trademark Trial and Appeal Board.

Opposition Proceeding Basics

A trademark opposition involves legal proceedings similar to a civil case in federal court. If you filed the trademark application for yourself as an individual or sole proprietor, you can file documents and appear before the Trademark Trial and Appeal Board. If you filed the application as a principal of your small business, you may likewise conduct business before the TTAB; however, you will be expected to know and follow the TTAB's Manual of Procedure, as well as address issues that may involve complex aspects of trademark law and procedure. The TTAB will notify you when an opposition is filed by regular mail or email. You have 30 days from the date the TTAB’s notice was sent to file an answer to the opposition. Depending on the issues raised in the opposition, you should evaluate well before the 30-day period expires whether you need to hire an attorney to answer the opposition.

Settlement Negotiations

Before you file a formal answer with the TTAB, determine whether you could negotiate a settlement of the issues raised in the opposition. As a matter of procedure, the TTAB will suspend the opposition proceedings for the purpose of settlement negotiations. The suspension is generally for six months and may involve periodic reports to the TTAB regarding the status of negotiations. However, the request for the suspension should be done before you file your answer. TTAB policy is to deny a request to suspend proceedings after the answer is filed unless good cause is shown, which is a difficult standard to meet.

Answer the Opposition

The answer to the opposition must be submitted in writing, either in paper format or electronically, and is similar to an answer filed in a federal civil case. The TTAB's Manual of Procedure provides specific information regarding how the answer must be formatted, such as how to include the case number and name of the tribunal. The Manual of Procedure also provides some guidance on the substance of the answer, which must include an admission or denial of all factual allegations in the opposition. The answer must signed before filing, and a copy must be mailed to the plaintiff -- the person or company who filed the opposition -- or the plaintiff's attorney.

Discovery, Hearing and Decision

After you file the answer, the TTAB will set deadlines related to discovery and a final hearing before the TTAB. The discovery process is intended to help you prepare your case for trial by permitting you to obtain information and documents regarding the plaintiff's case directly from the plaintiff, under oath. In most cases, the information and documents you receive can be used by you as part of your defense. At the end of discovery, both parties submit briefs -- written legal arguments -- to the TTAB and the TTAB will set a date for oral argument, if either party requests oral argument. The TTAB makes its decision after considering the briefs and any oral argument.